• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22

  Patent outcomesUS 10,288,840 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,288,840
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGSome claims unpatentable
  PTAB · Jun 17, 2021 · IPR2020-00300 · APJ Amber L Hagy · IPR · Final written decision

  Claims 1 and 21–26 were held unpatentable as obvious over Huber, Everett, and Lexer; claims 2, 27, 40, and 42 were not shown unpatentable. Substitute claims 44 and 45 were entered.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “(7) Claim 1 Conclusion After having analyzed the entirety of the trial record and assigning” slip op. at 31

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “For the above reasons, Petitioner has not met its burden to” slip op. at 72

  Patent outcomesUS 8,690,330 mixed
  § 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,690,330
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01194 · APJ Minn Chung · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Kim and Lee under § 103; Petitioner did not prove claims 4, 5, and 7 unpatentable because the combination was not adequately supported.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “determine that Petitioner has demonstrated sufficiently that the combination of Kim and Lee teaches “a mode indicator generator for generating a mode indicator that indicates a desired mode of the power gated circuit,” as recited in claim 1, and has articulated sufficient reasoning with rational underpinning for combining Kim and Lee to arrive at the subject matter of this claim limitation. c. Conclusion on Claim 1” slip op. at 64

  • Expert testimonyOther

    “F. Testimonial Evidence Petitioner relies on two Declarations from David Harris, Ph.D. in” slip op. at 9

  Patent outcomesUS 8,081,026 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65

  Patent outcomesUS 7,710,978 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,710,978
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision

  Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25

  Patent outcomesUS 6,597,221 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,597,221
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.Some claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01828 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 21, 281, 283–286, 288, 289, and 293 are unpatentable as obvious over Nozawa and Philips 4052; claims 25, 26, 363–366, 368, 369, and 373 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Qualcomm contends, citing Dr. Larson’s testimony, that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10–11 (citing Ex. 1002 ¶¶ 31–39). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “During the trial, ParkerVision asserted that we should maintain our construction of “harmonic” (PO Resp. 19–23), and Qualcomm did not address the adopted construction. With respect to the remaining terms, ParkerVision argues that none of these terms are material to the remaining dispute between the parties, which is focused on the “harmonic” limitation. Id. at 24–25. On this, we agree. As the remaining terms are not material to the parties’ dispute, we decline to construe them further. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Expert testimonyOther

    “Regarding the Maas equation, ParkerVision directs us to a portion of Dr. Larson’s deposition, in which Dr. Larson used the Maas equation to calculate the harmonics produced by a mixer, given certain assumed inputs supplied by ParkerVision’s counsel (an input signal of 100 kHz and an LO input of 1 MHz). Id. at 29–31 (citing Ex. 2001, 177–87). ParkerVision notes that Dr. Larson’s calculations produced -0.9, 3.1, and -4.9 MHz as the first three harmonics, which are not integer multiples. PO Resp. 31. Thus, ParkerVision argues, the circuit of Nozawa does not necessarily produce a plurality of harmonics, defined by the ’940 patent as being integer multiples of the fundamental frequency. Id. Qualcomm argues that the Maas equation “shows that Nozawa will necessarily produce the required ‘integer multiple’ harmonics for many input frequencies.” Pet. Reply 4 (emphasis added). According to Qualcomm, it is not required to show that Nozawa will produce integer multiple harmonics for all operating conditions; rather, it is only relevant that Nozawa could be operated to produce the harmonics. Id. Regarding Dr. Larson’s calculations during his deposition, Qualcomm contends that even using the assumed inputs provided by ParkerVision, the Maas equation shows that the 35th and 37th harmonics are 35.1 and -36.9 MHz, respectively, which are integer multiples of the fundamental frequency of 0.9 MHz. Id. at 7. Qualcomm also notes that selecting slightly different input frequencies for the Maas equation will produce much lower integer multiple harmonics, such as at the 7th and 9th harmonics. Id. at 8. The parties’ disagreements over the various inputs and permutations of the Maas equation aside, one point appears to be beyond dispute: under some conditions, but not all conditions, the Maas equation shows that Nozawa’s structure will produce a periodic signal that contains integer multiples of the fundamental frequency. In other words, the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim. Qualcomm argues that this is sufficient to show unpatentability. Pet. Reply 13 (citing Gen. Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 248–49 (1945)). On this point, we agree. Claim 21 and its dependents are apparatus claims; as such, they “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). In other words, the “periodic signal” limitations, which are directed to the transitory electrical signals produced by the apparatus, cannot give rise to patentability so long as the underlying apparatus has been shown to be capable of generating those signals. Here, it is undisputed that Nozawa’s circuit is capable of generating a periodic signal having a plurality of harmonics, wherein those harmonics are integer multiples of the fundamental frequency. Furthermore, we agree with Qualcomm that Nozawa’s low-pass filter is capable of isolating one or more of those harmonics, as desired.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Qualcomm contends that “Nozawa and Philips 4052 both provide architectures and methods for upconversion that can be used for a transmitter.” Pet. 21. Indeed, as Qualcomm observes, the 74HC4052 chip described in Philips 4052 is used in Nozawa. Id. at 28–29. We agree with Qualcomm that a person of ordinary skill in the art would have had reason to look to the disclosure of Philips 4052 to learn more about the operation of the 74HC4052 chip disclosed in Nozawa. ParkerVision does not challenge that a person of ordinary skill in the art would have combined Nozawa with Philips 4052.” slip op. at 12

  Patent outcomesUS 6,091,940 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,344
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.